Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/26/2026 has been entered.
Information Disclosure Statement
The information disclosure statement (IDS) filed on 06/26/2026 has been considered here.
Status of Claims
The amendments and arguments filed on 06/26/2026 are acknowledged and have been fully considered. Claims 1-22 are now pending. Claims 17 and 19 are amended; claims 8-15 are withdrawn.
Claims 1-7 and 16-22 will be examined on the merits herein.
Objections/Rejections Withdrawn
Rejections and/or objections not reiterated from previous Office Actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied, and constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-7, and 16-22 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2016146708 A1 (Meli, 2016; as submitted on IDS of 08/18/2022) in view of EP 2250995 A2 (Peng, 2010) as evidenced by “Muscovite” (2017; screenshot from the Wayback Machine from Muscovite Mineral | Uses and Properties).
In regards to claims 1-2 and 22, Meli teaches a pressed powder composition (see Meli, page 1, lines 11-13) comprising mica or talc (see Meli, page 7, lines 26-36). It is also taught that when talc is used, it is a lamellarity index of at least 1.0 (see Meli, page 8, lines 19-29). MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Further, as mica and talc are taught as equivalents (see Meli, page 7, lines 25-36), it would be obvious to one with ordinary skill in the art to envisage using mica with a lamellarity index and oil absorption that is identical to that of the talc, especially as it is taught that talc is replaced by the inorganic particulate material (e.g., mica) in all aspects (see Meli, page 4, lines 31-32). This is directly envisaged in Meli as an embodiment wherein a cosmetic composition comprising an inorganic particulate material having a d50 laser of at least 5.0 µm and a lamellarity index of at least about 1.0 is described (see Meli, page 30, lines 26-28). Further in regards to this point, as described by the instant specification, the lamellarity index is described as the following ratio (d50 laser – d50 sedi)/(d50 sedi) (see instant specification as filed, pages 5-6). The same ratio is taught in Meli (see Meli, pages 6-7). Further it is taught that the talc has an oil absorption of at least 70% as determined by ASTM D1483 (see Meli, page 11, lines 11-19). MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
In regards to claims 4-5 and 19-20, it is taught that the d50 laser of the inorganic particulate material is at least 5.0 µm (see Meli, page 30, lines 26-28). In another embodiment, the cosmetic composition is taught to have a lamellarity index of from about 1.0 to about 3.0, a d50 laser of from about 30.0 µm to about 40 µm, and a d50 sedi of from about 10.0 µm to about 15.0 µm (see Meli, page 33, lines 34-37). MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
In regards to claims 6, 16, and 21, talc, bentonite, zinc stearate, and magnesium stearate are listed as cohesive agents in the instant specification as filed (see page 3, paragraph 2). While talc is mentioned as a cohesion enhancer (see Meli, abstract) in Meli, mica and talc are taught as equivalents (see Meli, page 7, lines 25-36), it would be obvious to one with ordinary skill in the art to envisage using mica instead of talc in the compressed powder. Further bentonite is mentioned as a binder (see Meli, page 23, lines 1-9) and it is taught that the amount of binder used in the composition is variable, from about 1% to about 70% by weight while narrowing significantly to about 7.5% to about 12.5% by weight of the cosmetic composition (see Meli, page 25, lines 4-9). In an embodiment it is taught that the inorganic particulate material comprises up to about 95% by weight of the composition and from about 1.0% to about 20% of the binder by weight (see Meli, page 25, lines 11-13). With these amounts, a skilled artisan can easily envisage a cosmetic composition comprising 90% of the inorganic particulate material and 10% of the binder by weight. MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
In regards to claims 7 and 18, it is taught that the mica may be coated however it is not required as this is listed as an option (see Meli, pages 7-8, Inorganic particulate material).
The teachings of Meli are silent on the mica comprising at least 80% of muscovite as claimed by claim 17.
Peng teaches pressed powder cosmetics (see Peng, paragraph 0035) comprising uncoated mica (see Peng, paragraph 0036). Specifically the mica used in the composition is taught to be muscovite mica (i.e., mica that comprises at least 70%/80% of muscovite) (see Peng, example 1, paragraph 0065). Muscovite teaches that muscovite is the most common mineral of the mica family (see Muscovite, page 1, paragraph 1) and as such, it would be understood by one with ordinary skill in the art that muscovite mica meets the limitations of the claim as this type of mica would be 100% muscovite, which is a type of mica.
In regards to claims 1-7 and 16-22, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to use the teachings of Meli and Peng to formulate a composition as instantly claimed using the muscovite mica as it exhibits very good skin feel and is known to be used in pressed powder cosmetics. Further muscovite mica is a specific type of mica that is naturally found and Meli teaches the use of mica in its composition. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose .... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). One with ordinary skill in the art would be motivated to combine the muscovite mica of Peng with the composition of Meli according to the known method of making a compressed powder composition (see Peng, Example 4, paragraph 0081) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
Response to Arguments
Applicant's arguments filed 06/26/2026 have been fully considered but they are not persuasive in view of the modified grounds of rejection as necessitated by amendment.
In regards to applicant’s argument that none of the art teach or suggest the claimed low lamellarity index of mica, it is noted that , Meli teaches a pressed powder composition (see Meli, page 1, lines 11-13) comprising mica or talc (see Meli, page 7, lines 26-36). It is also taught that when talc is used, it is a lamellarity index of at least 1.0 (see Meli, page 8, lines 19-29). Further, as mica and talc are taught as equivalents (see Meli, page 7, lines 25-36), it would be obvious to one with ordinary skill in the art to envisage using mica with a lamellarity index and oil absorption that is identical to that of the talc, especially as it is taught that talc is replaced by the inorganic particulate material (e.g., mica) in all aspects (see Meli, page 4, lines 31-32). This is directly envisaged in Meli as an embodiment wherein a cosmetic composition comprising an inorganic particulate material having a d50 laser of at least 5.0 µm and a lamellarity index of at least about 1.0 is described (see Meli, page 30, lines 26-28). To this point, applicant argues that Meli’s teachings regarding talc cannot be directly extrapolated to mica, however the art explicitly teaches that talc is replaced by the inorganic particulate material (e.g., mica) in all aspects (see Meli, page 4, lines 31-32). It is understood that that mica and talc are not the same compound, however the art teaches their equivalence in use in the composition.
In regards to applicant’s argument that the citation of paragraph 0035 in Peng describes uses of pigment mixtures, rather than the structural feature of the mica, it is pointed out that paragraph 0035 of Peng lists the use case of the taught composition, which overlaps with the instant invention and provides further context to why it would be obvious to one with ordinary skill in the art to combine the teachings of Meli and Peng. For the structure of the mica, it is noted that paragraph 0036 is used to teach the uncoated mica. In regards to applicant’s argument that the mica of Peng has a different lamellarity index than the instant claims, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In the instant case, Meli teaches that the mica would have a lamellarity index that overlaps with the instant claims and Peng is used to teach that the use of muscovite mica (i.e., mica that has a content of at least 70% or 80% of muscovite) is known in the art for cosmetic preparations. As such, it would be within the purview of one with ordinary skill in the art to use muscovite mica in the composition of Meli.
In regard to applicant’s arguments that Meli teaches that a high lamellarity index is required for cohesion, it is pointed out that Meli teaches that of the talc is lamellarity index of at least 1.0 (see Meli, page 8, lines 19-29). Even if it is not a preferred embodiment, it is part of the teachings of the art. "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983). Applicant also argues that Meli discourages the use of low lamellarity talc for achieving the instant invention because the low cohesion, however it is noted that the talc is taught as a cohesion enhancer in the art and such it is not clear how this is discouragement from using it in the invention as claimed (see Meli, paragraph bridging pages 12-13)
In regards to applicant’s argument that the art does not teach the beneficial properties of the instant invention, the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Applicant then points to unexpected results. Applicant is reminded that whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). In the instant case, no data has been discussed to support the alleged unexpected results. "[A]ppellants have the burden of explaining the data in any declaration they proffer as evidence of non-obviousness." Ex parte Ishizaka, 24 USPQ2d 1621, 1624 (Bd. Pat. App. & Inter. 1992). If it is the amounts of the compounds used in the composition, then the criticality of these amounts/ranges should be established using proper comparison. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). Although evidence of unexpected results must compare the claimed invention with the closest prior art, applicant is not required to compare the claimed invention with subject matter that does not exist in the prior art. In re Geiger, 815 F.2d 686, 689, 2 USPQ2d 1276, 1279 (Fed. Cir. 1987) (Newman, J., concurring) (Evidence rebutted prima facie case by comparing claimed invention with the most relevant prior art. Note that the majority held the Office failed to establish a prima facie case of obviousness.).
As the arguments provided are not persuasive, the claims remain rejected as obvious as discussed above.
Conclusion
No claims allowed.
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/ISIS A GHALI/Primary Examiner, Art Unit 1611
/A.A.A./ Examiner, Art Unit 1611
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